Delhi Registry –Cum-Bench

G-62 to 67 & 196 to 204, August KrantiBhawan, BhikajiCama Place,

New Delhi – 110 066

Tele No: 011-26180613/14 Website: http://www.ipab.gov.in

OA/17/2020/PT/DEL

MONDAY, THIS THE 20TH DAY OF JULY2020

HON’BLE SHRI JUSTICE MANMOHAN SINGH CHAIRMAN

HON’BLE DR. ONKAR NATH SINGH TECHNICAL
MEMBER (PVPAT)

1. ALLANI FERID
65, BOULEVARD LANNES, F-75016.
PARIS, FRANCE

…APPLICANT/APPELLANT
(Represented by: MR. Praveen Anand and Ms.ArchanaShanker )

Versus

1. ASSISTANT CONTROLLER OF
PATENTS & DESIGNS
THE PATENT OFFICE, BOUDHIK
SAMPADA BHAWAN, PLOT NO. 32,
SECTOR 14, DWARKA, NEW DELHI - 110
075

…RESPONDENT

(Represented by – None)

ORDER

HON’BLE SHRI JUSTICE MANMOHAN SINGH, CHAIRMAN

The present appeal under Section 117A of the Indian Patents Act has been fixed

against the order dated 07th February, 2020 passed by respondent being the Controller of

Patents under section 15 of the Indian Patents Act, who rejected the appellant’s Indian

patent application No. IN/PCT/2002/00705/DEL (hereinafter referred to as IN’00705)

2. The fact of the case are that the appellant has filed the present patent application

entitled “METHOD AND DEVICE FOR ACCESSING INFORMATION

SOURCES AND SERVIC ES OF THE WEB” on 17th July, 2002 at the Indian Patent

Office and allotted the application No. IN/PCT/2002/705/DEL.

3. The present patent application No. IN/PCT/2002/705/DEL derived from PCT

International Application No. PCT/FR00/03759 dated 29/12/2000, which claims priority

from the French Application No. 99/16704 dated 30th December, 1999.

4. A request for examination for the said patient application IN/PCT/2002/705/DEL

was filed on 19th November 2004. The application was published under the provisions

of Section 11(A) of the Patents Act, 1970 as amended in 2005 (hereinafter referred as

‘Act’) on 31/08/2016.

The application was examined and First Examination Report (FER) was issued on

21st February 2005 with objections raised that “subject matter does not constitute under

section 2(1)(j) as it lacks inventive in view of the prior art i.e.D-1 for the invention

titled “Method and device for accessing information sources and services on the web

EP0847019”.

5. In response to the objections raised in the said FER the appellant’s agent

submitted the response via their letter dated 17th September 2005.

Second examination report was issued on 21st September, 2005 maintaining the

objections of first examination report on claims 9-14 along with a technical objection of

non-allowability of claims 1-8 under section 3(k) of the of the Act. As no response to

second examination report was filed, the application was deemed to have been

abandoned under section 21(1) of the Act.

6. The appellant had filed the writ petition © No.6836 of 2006 challenging order of

abandonment of Patent Application No. IN/PCT/2002/00705/DEL was filed on 2nd May

2006

7. On 25th February 2008 Hon’ble High Court directed Indian Patent office to review

the Patent Application no. IN/PCT/2002/00705/DEL by providing the necessary

opportunity of oral or written hearing. The response to further First Examination report

dated 21st September, 2005 was filed on 20th March 2008. Thereafter, a hearing was

scheduled for 22nd August 2008, in the matter by Patent Office in view of directions of

the Hon’ble Delhi High Court. The agents for the appellant appeared for the hearing and

submitted written submissions on 12th August 2008.

8. The respondent by an order dated 18th November 2008 refused the application.

An appeal under section 117A(2) of the act against said order dated 18th November 2008

was filed before the IPAB on 20th February 2009. IPAB dismissed aforementioned

appeal.

9. The appellant filed the writ petition before the Hon’ble High Court of Delhi on

December 19th , 2013 in view of said dismissal of appeal.

10. Delhi High Court order dated 12th December, 2019 disposed the petition and has

directed the Indian Patent Office to re-examine the said patent application No.

IN/PCT/2002/00705/DEL. The Hon’ble High Court held that the bar on patenting is in

respect of ‘computer programmes per se….” and not all inventions based on computer

programs. In today’s digital world, when most inventions are based on computer

programs, it would be retrograde to argue that all such inventions would not be

patentable. Innovation in the field of artificial intelligence, blockchain technologies and

other digital products would be based on computer programs, however the same would

not become non-patentable inventions-simply for that reason it is ra4re to see a product

which is not based on a computer program. Whether they are cars and other
automobiles, microwave ovens, washing machines, refrigerators, they all have some sort

of computer programs in-built in them. Thus, the effect that such programs produce

including in digital and electronic products is crucial in determining the test of

patentability.

11. Thereafter, in view of said order of Hon’ble High Court of Delhi a hearing was

scheduled by Patent Office on 27th January, 2020. The agents for the appellant for the

hearing via video conferencing and submitted written submissions.

The respondent by an order dated 07th February 2020 refused the application .

The respondent refused the grant of patent on application No. IN/PCT/2002/705/DEL

(IN’ 00705) also on the grounds that claimed invention lacks novelty falls under

section 3(k).

The said has been challenged before us. Despite of service, no counter affidavit

has been filed. No one appeared on behalf of respondent. It is the admitted position

that term of patent is expiring in December 2020. Thus, the appeal was heard on

urgent basis.

12. The invention as claimed by the appellant in the rejected independent claim(s)

of IN” 00705 is as follows:

(i) The present invention provides a method and device for accessing information

sources on the web.

(ii) As also discussed in the complete specification

(iii) Before the disclosure of present invention, in response to a request for a particular

information resource, typically, the requesting station (e.g. aclient) …. Can receive

either directly a document, or usually a new HTML page containing itself a more and

less high number of links among which the user will still have to make a new choice….”
iv) As such request for search before the present invention was merely a generalized

one, and therefore multiple request-answer step(s) are generated and a corresponding

delay is associated for each such request for information resource.

Thus as a disadvantage, response time and search duration for such a request is

significantly increased and one of the reason for the same is generalized nature of

request without clear details of the information requested.

It is alleged that in order to overcome at least said disadvantage , the present

invention proposes to first extract clear and concise details of the information resource

the user is looking for in a localized manner (e.g. on a client device) before passing a

well construed query to internet. All such localized steps for such extraction called

“preliminary selection steps” are implemented locally on a client machine deliberately

avoiding an access to the web unless necessary information for a well formed query is

obtained from user. Likelihood of a successful access of information resource increases

manifold.

13 Claims of the appellant

It is the claim of the appellant that the main objective of present invention to be

able get the desired information resource with a single“hit” to the web (to achieve above

technical advantages) the present invention advantageously teaches delaying such a hit

to the web unless necessary parameters to construe the request have been extracted from

user.

Such extraction from user (implemented via preliminary selection steps) is done locally

on client machine without accessing the web.

Said feature (s) of Para 0032 above are illustrated at least via FIGURE 1 of the

Complete Specification.
 Thus, present invention is directed to a technical problem of providing an efficient

search strategy for accessinginformation sources and services on the Web.

Response of D-1 by the appellant

In response to the objection raised by the respondent about the prior art i.e.

document D1: EP0847019A1 as cited by Respondent is admittedly directed to

“….method for selecting a particular information item from a plurality of information

items..”.

It is submitted that D1: EP0847019A1is as described and claimed is a “…METHOD OF

SELECTION..”.

A selection can be made

- when there are at least two options,

- said options are available beforehand

-and user has the discretion to select any of the available option .

It is submitted that in contrast, claims of present invention are a method for

accessing information sources. An information is accessed when it is not available

beforehand(like in present invention).One of the fundamental differences between D1

and present inventionis that D1 is related to method of selection from two options

which are already available to a user while present invention is directed to a method (and

device) for accessing information resources not available to user.

13.1. It is submitted that the fundamental difference can be understood at least

from the abstract of D1 which states that

“…In an information processing system a useris given access to two subsets (203, 206)

of information items through two respective hierarchical multi-level menu-structure

(100,204). The second of the menu- structures (204) comprises at least the sub-menus

providedforinthefirstofthemenu-structures(100)andthe second of the subsets (206)

includes at least the information items included in the first of the subsets (203)….”

It is informed that in fact, D1describes that first subset of data items on a local

station is actually merely acting as a cache for second subset of data items on a central

station.

In this regard, D1 states

“…The invention is not limited to such a system with a local station and a central station

but can also be employed in other systems, e.g. where thefirst subset forms some kind of

cache for the second subset…”

Thus, again confirming that D1 is suitable as a method of selection only.

It is submitted that for example, admittedly, D1 enables a user to select the

particular information item from a first subset of the information items through a first

hierarchical multi-level menu-structure and to alternativelyselect the particular

information item from a second subset of the information items.

A user is able to proceed from a particular sub-menu in the first menu-structure to a

corresponding sub-menu in a second hierarchical multi-level menu-structure (for

selecting the particular information item from the second subset through the second

menu-structure) because the second menu-structure comprises sub-menus corresponding

to the sub-menus of the first menu-structure and the second subset comprising the

information items of the first subset i.e. in D1 both first menu structure and second menu

structure have similar structure of navigation. D1 clearly states that it “….offers the user

access to the second subset of information items in a way that is highly similar to the

way of access to the first subset of information items. This relieves the cognitive load of

the user when navigating between the first and second subset of information items,

because initially the user only has to familiarise himself with a single menu-structure

that underlies both the first and the second menu-structure….”.The D1 in its own

language admits that it “…enables the user to return from a particular sub-menu in the

second menu-structure to the corresponding sub-menu in the first menu-structure. This

offers the user the possibility to return to the first menu-structure, after having consulted

the second menu-structure…”.

Thus, again the first menu structure and second menu structure are used for

“consultation”.DI also states that “…local station is connected to the central station via

Internet…”.
 Thus, for each such “consultation” D1 makes use of internet.Further, importantly, as

disclosed in D1,

“….upon selecting the particular item from the second subset, it is verified whether the

first subset comprises an information item corresponding to the particular

information item in the second subset and if such information item is comprised in the

first subset then this information item is accessed to substitute for the particular

information item. By verifying whether the first subset of the information items

comprises an information item corresponding to the particular information, i.e. an

information item containing data on the same subject as the particular information item

that has been selected by the user from the second subset of information items, a transfer

of the data of that information item from the second menu-structure to the first menu-

structure can be avoided. The data on that subject can in that case be retrieved from the

information item in the first subset. This then avoids the need of sending potentially a lot

of data over the network, in the case the method according to the invention is applied for

a local station with the first menu-structure and a central station with the second menu-

structure. …”

D1 goes on to state that

“…….second menu-structure allows modification to include a further sub-menu and/or

to include an updated information item. The fact that the second menu-structure and/or

the second subset of information items can be updated makes it in an easy way

possible to supply the user with more recent data. This is because the first menu-

structure and the first subset of the information items may remain static, i.e. the

structure and items are not updated, while the user gets access to the more recent data

through the second menu-structure….”

Thus it is stated that in essence D1 merely provides a selection method to access to the

more recent data through the second menu-structure.

In this regard, D1 states that

“….data in the local subset can be stored in a format that is particularly suitable for

the local station, whereas the data stored in the external subset must be stored in a

generally applicable format since potentially different types of local station must be

able to receive and interpret that data. An example is that the data concerns a still

image which is stored in high resolution in the local subset and in a low resolution in

the second subset, because the high resolution image would take too much time to be

transferred. Another example is that the data constitutes in the local subset a video track

in MPEG format and in the external subset a slide show with a number of still images,

mimicking a video track, because not all kinds of local stations that are serviced from

the external subset can handle MPEG….”

13.2. Further, D1 states that

“…..The first subset 202 includes a selection of the information items available to the

user. ……… The second subset 206 includes at least the information items that are also

included in the first subset 202. A particular information item included in the second

subset 206, like information item 207, may contain data that are different from the data

contained by the corresponding information item in the first subset. So an information

item can be included in both subsets, like an element that is a member of two sets in the

mathematical sense, while its data in the two subsets remains distinct. An information

item is to be understood as an identification for the data that can be retrieved for a user.

An example is an information item that is the Eiffel Tower in Paris, whereby its data

in the first subset is a still image in first format (e.g. JPEG) and its data in the second
subset is a still image in a second format (e.g. GIF). Then both subsets include the

same information item Eiffel Tower, the first subset contains the JPEG image and the

second subset contains the GIF image….”

Thus, in nutshell, D1merely allows a user to selection different versions of same

data items stored on two menu structures. One version on local station and another on

a central station.

13.3 In deep contrast with present invention D1 does not allows a user to search for an

information resource which is not already present on either of the menu structures be it

on local station or on central station (as it is a method of selection).

In fact, importantly, D1 merely refers to second menu structure on a central

station which contains more recent version of data items (as it is updated) and consumes

bandwidth resources (against the teaching of present invention) for this as well

irrespective of whether this will result in a successful selection or not.

Also, as submitted above with respect to D1 local station is connected to a central

stationVIA Internet.

Every time a user migrates to second menu structure , as explained above it is

verified whether the first subset comprises an information item corresponding to the

particular information item in the second subset and if such information item is

comprised in the first subset then this information item is accessed to substitute for the

particular information item.

Thus, in D1,a user migrates to second menu structure of server irrespective of whether it

has the data item or not.Therefore, as discussed it would NOT be fair to say that D1

suggests that every time a data item is not present on first menu structure that user

referred to second menu structureon central station.

13.4. Further, every time a user proceeds from a particular sub-menu in the first

menu-structure to a corresponding sub-menu in a second hierarchical multi-level menu-

structure whether for mere consultation or for accessing another version of data item the

CENTRAL STATION is accessed via INTERNET.

Thus, irrespective of whether data item on second menu structure is retrieved or

not i.e. second menu structure is merely consulted or an actual data item is accessed,

internet access is made to central station which itself defeatsthe teaching of present

invention that web/internet access must be made only as a single and final stepfor a

single retrieval of information which is not available with user.

In fact, as per D1 multiple access to central stationcan be made via internet (thus

using bandwidths multiple time) even a before a single item of retrieval is made.

“…the local station is connected to the central station via Internet. Since Internet is

widely available and used by many people, it is advantageous to use Internet as the

connection mechanism between the local station and the central station in the method

according to the invention…”

13.5. Further, as submitted before D1 is merely a method of selection.

Thus, as D1 teaches against the disclosure of present invention i.e. delaying and emitting

of only a “final” and “single” well –directed request to internet/web, it does notmake the

present invention obvious.

13.6. Structure which is a well known technique in the art.

In response thereto, it is submitted that hierarchical structure navigation is merely a

known algorithm on which vast number of inventions serving different purposes may be

based.

D2 is allowing online help information by providing a navigational window pane

and a HTML window pane in a single window. Once a user selects a topic in the

navigational window pane, the corresponding content information is displayed in the

HTML window pane.

The crux of D2 is to provide both navigational window and HTML window pane

on a single window (which displays the results) as a matter of convenience.

D2 states that

“…..By simultaneously providing both the navigational window pane and the HTML

window pane to the user, the user can easily determine whether the displayed

information in the HTML window pane is desired. If it is not desired, the user can

quickly and readily select different information without having to change or close the

window. As a result, the user is able to more easily and effectively access online

information and/or use the help application than was possible with prior art techniques

for providing user information….”

13.7. With regard to D-3, it is alleged that D3 merely relates to providing services

over internet and does not overcome the shortcomings of D1 and D2 as submitted above

which are not repeated merely for the sake of brevity.

13.8. That with respect to Respondent‘s objection that claimed invention falls under

section 3 (k) we note that as per section 3 ,among other things, following are not

inventions within the meaning of this Act

“…mathematical or business method or a computer program per se or algorithms..”

14. Admittedly theHon’ble High Court of Delhi via order W.P. (C) 7/2014 & CM

APPL. 40736/2019 dated December 12th, 2020 made, among others, following

observations:

“…

10. The addition of the terms `per se’ in Section 3(k) was a conscious step and the

Report of the Joint Committee on the Patents (Second Amendment) Bill, 19991

specifically records the reasons for the addition of this term in the final statute

asunder:

“In the new proposed clause (k) the words “per se” have been

inserted. This change has been proposed because sometime

the computer programme may include certainother things,

ancillary thereto or developed thereon. Theintention here is

not to reject them for grant of patent

iftheyareinventions.However,thecomputerprogrammes `as

such’are not intended to be granted patent. The

amendment has been proposed to clarify the purpose.2”…”

A perusal of the above extract from the Report shows that Section 3 (k) which was

sought to be inserted by the Patents (Second Amendment) Bill, 1999 originally read as

“a mathematical or business method or a computer program or algorithms.” “The words

`per se‟ were incorporated so as to ensure that genuine inventions which are developed,

based on computer programs are not refused patents…”

15. It was also observed by Hon’ble Delhi High Court that ”… the patent

application deserves to be considered in the context of settled judicial precedents which

have now laid down the interpretation of Section 3(k), the Guidelines and other material

including the legislative material..”, we are providing our submissions accordingly.

16. It is submitted on behalf of the appellant thatthe present invention delays

emitting of a “final” request to (web) internet by locally implementing preliminary

selection steps and using said locally implemented selection to form a well-construed

query which is finally emitted to Internet.As only a “final” and “single” well –directed

request is emitted to internet, at least following technical advantages are achieved as

alleged.

- bandwidth (for emitting a request on web/ internet) is utilized only once (per request)

[saving of network resources]

- the mean time duration observed for accessing searched information is drastically

reduced

- likelihood of a successful access of information resource increases manifold.

Thesetechnical advantages now fall under paragraphs of Guidelines for

Examination of Computer Related Inventions, 2013 which define “technical effect” (and

“technical advancement”) asunder:

 “….It is defined for the purpose of these guidelines as

solution to a technical problem, which the invention taken

as a whole, tends to overcome. A few general examples of

technical effect are as follows:

• Higherspeed

• Reduced hard-disk accesstime

• More economical use ofmemory

• More efficient data base searchstrategy

• More effective data compressiontechniques

• Improved useinterface

• Better control of roboticarm

• Improved reception/transmission of a radiosignal…”

17. Counsel for the appellant submits in that in view of present invention as

claimed clearly exhibits a “technical effect” for

- avoiding the use unnecessary bandwidth (for emitting a request on web/ internet) as

the same is utilized only once (per request) [saving of network

resources] and when search request has sufficient details

i.e. till the user has not provided sufficient details in the search request, no request is

emitted to internet and bandwidth is not consumed.

- reducing the mean time duration observed for accessing searched information.

Thus, claimed invention falls under at least the following indicators of technical

effect i.e. Higherspeed, more economical use ofmemory and a more efficient data base

searchstrategy.
 As observed by Hon’ble High Court of Delhi in said order W.P. (C) 7/2014

& CM APPL. 40736/2019 dated December 12th, 2017. In para 10 it was observed that

“…..the effect that such programs produce including in digital and electronic products is

crucial in determining the test of patentability…”and also in Para 11 that

“…If the invention demonstrates a „technical effect‟ or a,, „technical contribution‟ it is

patentable even though it may be based on a computer program.”.

Said Para 11 also states that

“…Across the world, patent offices have tested patent applications in this field of

innovation, on the fulcrum of `technical effect‟ and „technical contribution‟….”

18. Inpara 48 of order dated 7th February, 2020, Respondent maintained that

first hierarchical multi- level menu-structure of D1, which is stored in local station is

similar to the locally stored “preliminary selection steps” of the instant application.

However, Respondent failed to appreciate that “hierarchical navigation” is a well -

known navigation algorithm and can be implemented in a variety of ways.

In fact D1 admits at least via [Column 1, Lines 30-33] that “It is known to retrieve

an information item from a plurality of information items through a hierarchical menu-

structureinaninformationprocessingsystem.”

Importantly, present invention utilizes “hierarchical navigation” to narrow down

a request to make it well directed and construed to access a specific resource in a single

attempt/iteration.

D1 uses “hierarchical navigation” to navigate through data items both in local

station and central station.

In Para 49of impugned order dated 7th February, 2020 therespondent maintained

that (a) “…feature of “final request to internet” of instant application can’t be said to
involve any technical difference vis-a-visD1, as it allows user to access the second

menu-structure which resides on a central station…”

19. It is mentioned by the counsel that the respondent erred in his finding as

illustrated in Para 0078 above as in D1 user continuously hops from location station to a

central server (utilizing internet at each such hop), the exact disadvantage the present

invention is avoiding (of going to internet multiple times (for each such switch) and

again checking whether found item on second menu structure is already present on first

menu structure or not).

20. We have heard, Mr. PravinAnand and Ms. ArchanaShanker on behalf of

appellant. No one appeared on behalf of respondents who even failed to file the counter

statement and written submission. Let us now deal with the case of the appellant on

merit.

21. The relevant dates related to the patent application–

Title of the invention: Method and Device for Accessing Information Sources and

Services on the Web”.

a. Indian national phase application IN/PCT/2002/00705/DEL date- 17.07.2002

b. International PCT application PCT/FR2000/003759 date - 29.12.2000

c. Priority date of Indian patent application – 30.12.1999

d. Term of the patent application due for expiry on – 29.12.2020

22. Background of the Invention –

In simple language the invention is as follows -

a. The invention dates back to 1999, when the internet technology was still in the

nascent stage of its development.

b. The goal of the present invention is to provide, easy, quick and direct access to

required sources and services on the internet (web) without wasting precious network

resources, such as bandwidth.

c. On the internet, a web search engine allows a user to carry out a search for any

particular information, so desired by the user.

d. The search results are generally presented in a list of results, often referred to as

search engine results pages (SERPs) and such results comprise a mix of links to web

pages, images, videos, infographics, articles, research papers, and other types of files.

The user is expected to select the desired result from the list so provided.

e. Unlike web directories, which are maintained only by human editors, search engines

also maintain real-time information because they can access real time content

available on the internet. Thus a typical web search engine will access the internet

and provide the user, on request, with results which were not previously available

with user in near real time.

23. As per appellant the present invention is that :-

a. As stated above, prior to the present invention, whenever a user wished to

conduct a search over the internet, in response a high number of hyperlinks were

returned and user had to make a choice again.

b. To overcome at least the said disadvantage(s), the present invention proposes to

first extract clear and concise details of the information which the user is looking for, in

a localized manner [i.e. on the user’s computer], before passing a well construed query

to internet.

c. It is important to note that the access was only in relation to the address on the

website and not to the data unlike the prior art document. To
d. The steps taken to extract the information on the user’s computer are called

“preliminary selection steps”, which are implemented locally on the user’s computer

itself, in order to avoid access to the web, unless necessary information for a well

formed query is obtained from user.

e. Through the preliminary selection steps of the present invention, the query of the

user is refined and narrowed down at each step so that the user is interactively made to

target a particular and well-defined information and a website address is particularly

generated locally (without using the internet bandwidth). Thereby, the user is taken

directly to the said website, limiting the use of the bandwidth resource only once per

search.

24. As in the present invention, the web site address is generated locally and

passed on to a network for retrieving the required information /data and consuming the

internet bandwidth only once, no bandwidth is assigned unless the user has provided

sufficient information to take such user to the particular website address, therefore

avoiding the unnecessary wastage of bandwidth.

FIGURE 1 OF THE PRESENT INVENTION

 Thus, essentially, the present invention delays emitting of a “final” request

to the internet by locally implementing preliminary selection steps and using the said

locally implemented selection to form a well-construed query (a locally formed website

address) which is finally emitted to the Internet, thereby gaining the technical effects as

detailed in the next section.

25. It is submitted on behalf of appellant that all Technical effect of the present

invention which solves the aforesaid limitations

a. The invention provides a forward looking solution in the form of an ‘Efficient Search

Strategy’ to overcome the problems encountered in the traditional search engines

which existed in 1999.

b. The technical solution provided by the present invention is to retrieve the detailed

information about the result which the user is looking for, and thereafter taking the

user directly to the desired internet resource (utilising the said detailed information)

e.g. a website, rather than providing a list of results for user to choose from, therefore

making it inconvenient for the user. As the user has accurately specified the resource

required, the bandwidth so consumed is guaranteed to assure a successful result to the

user.

c. Thus, the present invention delays emitting of a final request to the internet by locally

implementing preliminary selection steps to form a well construed query, which is

finally emitted to the internet.

d. The present invention drastically reduces the mean time duration for accessing the

searched information, because the user does not spend time in selecting and

reviewing multiple search results as returned by the other prevalent technologies in

1999. Therefore, the user gets the desired results without compromising on the

relevancy and quality of results.

e. The present invention avoids the use of unnecessary bandwidth (for emitting a

request on the internet) as the same is utilized only once per request, thereby saving

the network resources. i.e. till the user has not provided sufficient details in the search

request, no request is emitted to the internet and bandwidth is not consumed.

f. The present invention is also economical, as the internet bandwidth is consumed only

once per search. Since, the present invention drastically reduces the use of bandwidth

per user, it is likely to result in a decrease in network congestion, resulting in

increased quality of internet service to the user.

26. As per the case of appellant that the Novelty of the present invention

resides:-

a. It is stated that the present invention, apart from providing a critical technical effect,

is also novel and unique.

b. The Respondent relies upon EP 0847019 (hereinafter referred to as “D1”) as the prior

art with respect to the present invention.

c. Examples to simplify the understanding of D1 vis-à-vis the present invention –

D1 - A user is selecting an information item, for eg. an image of the Eiffel Tower,

which is available on the Local Station (User computer) in a JPEG format. Now, the

image of the Eiffel Tower may also be available in a different format (such as GIF

Format) on the Central Station. Thus clearly, the image of the Eiffel Tower is already

available to the user, but the User is allowed to make a selection in order to choose

either of the image stored in either JPEG format in the Local Station or the GIF

format in the Central Station.

27. It is submitted that the present invention - Assuming the user wishes to

search for the address and the contact details of the supporters of the Chelsea Football

Club, with the intention of acquiring a shirt with the colours of the club and possibly
booking slots for the next championship final. To implement this search, in line with the

present invention, the following steps would be executed, without the use of the internet

a) The user will select the theme ‘TH1’ on Page ‘P0’ leading to the display of sub-

theme ‘TH1i’ as “COLLECTIVE SPORTS”.

b)The user will then select the sub-theme as TH1i, as “COLLECTIVE SPORTS”.

c)The user reaches the Page ‘Pn-m’, dedicated to “FOOTBALL CHAMPIONSHIP”.

d)Among the various options available to the user on Page ‘Pn-m’, the user selects

ADn2, i.e. “CLUB OF SUPPORTERS”, as the user is looking for a shirt with the

colours of the club and possibly booking slots for the next championship final.

e) As the selected icon is of type ‘AD’, i.e. direct access icon, it means that the

present invention has gathered sufficient information from the user, and accordingly a

complete address of the ‘Welcome’ page of the target website is generated.

f)Thus, the user is taken directly to the requisite website, as he has already provided

sufficient details for the information which he is looking for. Neither the user is provided

with a list of results to choose from, nor there is a chance that the bandwidth used in

emitting well-formed queries or request would be wasted, as long as the target website is

in working condition.
 The above examples, as cited in the respective specifications of both the

inventions, make it abundantly clear that the objective, process involved and the effect

of both the inventions are entirely different.

28. It is rightly alleged that the Respondent has incorrectly identified D1 as the

relevant prior art with respect to the present invention as both these inventions have

different objectives and they therefore provide different solutions.

The following table elucidates the key differences between the present

invention and D1.

S. Features EP0847019 (D1 cited by Present Invention

No. the Respondent)

1. The object of D1 is to allow Prior to this invention,

a user to move from menu a request for making a

structure of Local Station to search was merely a

the menu structure of the generalized one which

Central station in a resulted in generation

Goal /
seamless manner by of multiple request-
Technical
keeping the menu structure answer step(s) and
Problem
of the Central Station such a delay
being
highly similar with the corresponded to each
addressed
menu structure of the Local request-answer step,

Station. which is emitted on

the Internet.

D1 does not allow a user to The invention allows a

 access a remote resource / user to access a remote

information (not already resource / information,

available with the user), but not currently available

it merely allows for to the user by any

selection of data items means, but available

available to the user on the on the web.

Local Station having static

data or as a “more recent”

data on the Central Station.

2. To provide users with an The present invention

updated recent version of proposes to first

the locally stored extract clear and

information (from Local concise details of the

Station or Central Station) information which the

by providing a hierarchical user is looking for, in

menu structure on a Central a localized manner

Station which is highly [i.e. on the user’s

Technical similar in “structure” of the computer], using

Solution Local Station. “Preliminary Selection

Steps”, before passing

a well construed query

to the internet.

The fundamental difference between D1 and present

invention is that D1 is related to method of selection

from two options, one option available to user as a

 static data on local station while second option

available as a more recent data to a user.

Conversely present invention is directed to a method

(and device) for accessing information resources not

available to user on its local device, be it as a static

data and certainly not as an updated recent data. In

fact in present invention no data is stored on user’s

device but is accessed from web as a final step and

only when sufficient information is gathered from

user.

The local menu structure of In the present

D1 has a connection button invention, selection of

that allows a user to move a direct access icon

to a second menu structure results in generation of

on a Central Station, having a website address

a similar hierarchical locally on a user’s

structure. computer machine,

which is emitted to the

internet.

3. D1 can only be used for Since there is no

implementing product storing of data on the

catalogues, service user’s computer

Area of
brochures etc. because D1 machine, but only
application
inherently stores data itself webpages are saved

on Local Station as well as for seeking details of

Central Station, and only a the information the

 limited amount of data can user is looking for

be stored. through the

‘Preliminary Selection

Steps’, the present

invention can be used

for searching virtually

unlimited information

across a variety of

field, available on the

web.

29. The said findings are interpretations are not with the spirit of the order

passed by the High Court. From the entire gamut of the matter, it appears to us that in

view of previous invention, technical problem which the invention solves in the present

application is that the present invention was a critical addition to the functionality of the

internet in 1999, as the state of the art at the time, faced the following limitations -

a. Before the disclosure of the present invention, whenever a request was sent for

accessing a particular information resource by a client / user, in response a high

number of hyperlinks were returned and the client / user had to make a choice again,

thereby making a constant to and fro. Repeated access was required to the internet

and the connection to the internet had to be made multiple times, in order to derive

the accurate result of the user’s query.

b. The technical problem which existed in the art prior to the present invention was that

a typical user was made to use precious bandwidth even before the desired result was

provided to the user.

c. Prior to this invention, a request for making a search was merely a generalized one

which resulted in generation of multiple request-answer step(s) and such a delay

corresponded for each such request for the information resource.

d. Such a delay corresponded to each request-answer step, which is emitted on the

Internet. The existing art prior to the priority date of the invention, would

immediately assign network resources in delivering a number of results to the user,

even before the user could indicate whether the list of results so received are useful to

it or not.

e. Allocation of network resources such as bandwidth, even before the user receives the

desired results, resulting in jamming of network traffic, servers, and increase in the

memory size of pages etc., and a corresponding delay in the search process, thereby

making the search process long, tedious and uncertain. The said disadvantages

increase manifold when multiple users would make use of the search process, as

described above in points (a) to (d).

f. The search and navigation methodology being used in the art prior to the present

invention was difficult to understand and non-intuitive, which created problems for

users, who are unfamiliar with the system.

30. The Respondent has committed an error in holding that, while referring to

the guidelines followed by Patent offices to grant patents in Computer Related

Inventions, the Hon’ble High Court was referring to EU guidelines, instead of the Indian

guidelines, without giving any explanation thereof.

31. The Respondent has incorrectly held that if there are any inconsistencies

between the guidelines in the European Union (“EU”) and the guidelines relating to

Computer Relate Inventions, 2013 (“CRI Guidelines, 2013”), as issued by the Office of

the Controller General of Patents, Designs and Trademarks of India, the EU guidelines

shall supersede. This error is apparent as the CRI Guidelines, 2013 provide cogent and
coherent guidance in terms of the indicators of “technical effect”, and no reasoning is

provided by the Respondent, for not following the same.

32. Inpara 13, it is observed that “Insofar as Computer Related Inventions are

concerned, there are three sets of guidelines that have been published by the Patent

Office............. There can be no doubt as to the fact that the patent application deserves

to be considered in the context of settled judicial precedents which have now laid down

the interpretation of Section 3(k), the Guidelines and other material including the

legislative material.”

In Para 14 of the Order dated 12.12.2019 it was held that “Accordingly,………. it is

deemed appropriate to direct that the Petitioner’s patent application is re-examined in

the light of the above observations and in accordance with the judicial precedents,

settled practices of patent offices in examining such patent applications, including the

Guidelines which have been issued for Computer Related Inventions.”

33. Para 6 of the Impugned Order it was observed that – “Now, having said

that legal position in India similar to the EU, the Hon’ble High Court must have meant

the patent offices of EU only, while referring to the settled practices of patent offices in

the para 14.Thus, now traversing the course of evolution of exclusion provision, of

computer program from patentability, in EU can bring clarity, despite any inconsistency

within the Guidelines for Examination of Computer Related Inventions (CRIs) as pointed

out by the Hon’ble High Court.”

The Indian guidelines relating to Computer Relate Inventions, 2013, as issued by

the Office of the Controller General of Patents, Designs and Trademarks clearly stipulate

the following examples to provide a ‘technical effect’ [Ref: Point 3.15 at Page 177 of

the Written-Submissions dated 30.06.2020] –

 i. Higher speed

ii. Reduced hard-disk access time

iii. More economical use of memory

iv. More efficient data base search strategy

v. More effective data compression techniques

vi. Improved user interface

vii. Better control of robotic arm

viii. Improved reception/transmission of a radio signal

As the present invention falls under at least the following indicators of technical

effect i.e. Higher speed, more economicaluse of memoryand a more efficient

data base search strategy, the present invention is patentable.

34. Therefore, in light of the Hon’ble Delhi High Court’s direction that the

Guidelines for grant of patents relating to the Computer Related Inventions are to be

considered, along with the settled judicial precedents for granting the patent, as well as

the fact that the present invention provides atleast the aforesaid technical effects, the

Patent ought to be granted in favour of the Appellant.

35. It appears to us that the respondent has incorrectly identified D1 as the

relevant prior art with respect to the present invention as both these inventions have

different objectives and they therefore provide different solutions. The Respondent erred

in stating that the hierarchical multilevel menu-structure of D1, is similar to the locally

stored “preliminary selection steps” of the present invention.

Para 48 of the Impugned Order was referred – “But, from the disclosures of

D1, it is clear that the first hierarchical multilevel menu-structure of D1, which is stored

in local station is similar to the locally stored “preliminary selection steps” of the

instant application
 The said reasoning of the Respondent is incorrect for the following reasons –

i. Respondent failed to appreciate that ‘hierarchical navigation’ is a well-known

navigation algorithm and can be implemented in a variety of ways.

ii. Importantly, the present invention utilizes ‘hierarchical navigation’ to narrow

down a user’s search query to make it well construed without the use of the

internet, to access a specific resource in a single attempt/iteration on the internet

(Ref: Line 18 at Page 3 of the specification, at Page 232 of the written

submissions dated 30.06.2020), whereas, D1 uses “hierarchical navigation” to

navigate through data items both in Local Station and Central Station.

36. The Respondent erred in stating that the feature of “final request to internet” of

instant application can’t be said to involve any technical difference vis-à-vis D1, and

therefore the present invention shares the same objective as D1. In reply to the same, it

is submitted that inD1 the user continuously hops from Location Station to a Central

Server (utilizing internet bandwidth at each such hop), the exact disadvantage the

present invention is avoiding (of going to internet multiple times (for each such switch)

and again checking whether found item on second menu structure is already present on

first menu structure or not).In fact, as compared to D1,

37. The present invention solves the aforesaid problem, thereby optimizing the

mean time duration and bandwidth usage required in successfully accessing a remote

resource.The Respondent has erred in stating that the argument regarding the technical

effect provided by the present invention, can only be sustained if the ‘second menu

structure’ as covered in D1, is considered an impediment. Further the Respondent has

erred in stating that D1 is an advancement over the present invention

It is obvious that inD1the user continuously hops from Location Station to

a Central Server (utilizing internet bandwidth at each such hop), the exact disadvantage

the present invention is avoiding (of going to internet multiple times (for each such
switch) and again checking whether found item on second menu structure is already

present on first menu structure or not. In fact, as compared to D1, the present invention

solves the aforesaid problem, thereby optimizing the mean time duration and

bandwidth usage required in successfully accessing a remote resource.D1 does not

achieve the ‘technical effect’ of present invention, i.e. saving of the internet bandwidth

as well as the reduced time duration in receiving the desired search results. Rather in

contrast, D1 remains only a method of selection, fetching data from either a local station

or updated data from a central station. In D1, the internet bandwidth is used again and

again since the user continuously hops from Location Station to a Central Server,

irrespective of the fact that whether ultimately the data item is retrieved or not.

It is apparentthat theRespondent has incorrectly appreciated the specification of the

present invention to say that (i) the term “extract clear and concise details of the

information resource” in the specification is ambiguous and vague. Further the

Respondent has erred in stating that (ii) the “preliminary selection steps” and icons of

page P0 are contradictory.

38. Mr. PravinAnand has given the working example of the present invention is

present in the specification of the present invention. The example shows that, how clear

and concise details of the information resource (which the user is looking for) are

extracted by making the user to select a particular theme (e.g. SPORT), then subtheme

and so on till necessary information for locally generating a web site address is obtained

by way of such selections by the user.

The complete specification of the present invention clearly states that method of claimed

invention starts when user selects a “TH” icon, i.e. the “Theme Icon”. (L01, L02,….,

L0i) as referred to in the specification are not a part of novelty and inventive step of

invention and are not utilized for the same. For Example, the Respondent, while holding

that the icon ‘Po’ is contradictory to the ‘preliminary selection steps’, and also holding
that“…instant application recites “preliminary selection steps”, however it itself at first

page P0 provides various icons (L01, L02,…., L0i) featuring merchant sites or portals

i.e. a request to the internet..” has failed to appreciate that icons L01, L02… L0i [as

referred to by Respondent] featuring logotypes, graphic or semi graphic marks, merchant

sites or portals for entering major commercial brands, for example a chain of hotels and

restaurants or a large scale distribution company, in fact refers to those cases wherein a

user can be taken directly to a website and the user is not required to provide any further

detail about the information that he/she is looking for and therefore a website address

can be generated locally right at first page P0 . So there is no contradiction, as pointed

by the Respondent.

39. No doubt the Respondent stated that structuring of the query is in the realm

of computer programming, but the present invention delays emitting of a “Final” request

to the internet (web) by locally implementing the “Preliminary Selection Steps”,

gathering more information from user and using such gathered information via the said

locally implemented selection to form a well construed query which is finally emitted to

the internet. Therefore, the claimed invention is not limited to “structuring of query” as

stated by the Respondent.

The Respondent has failed to appreciate and apply the direction of the Hon’ble

Delhi High Court as contained in Paragraphs 10 and 11 of the Order dated 12.12.2019

passed in W.P. (C) 7/2014 & CM APPL. 40736/2019. The Hon’ble Court clearly stated

that if the invention demonstrates a “technical effect” or a “technical contribution”, it is

patentable even though it may be based on a computer program. Therefore, without

appreciating the technical effect produced by the present invention, as elucidated above,

the mere fact that a computer program is used for effectuating a part of the present

invention, does not provide a bar to patentability. Thus, the invention MUST be

examined as whole and the following factors are to be considered while deciding upon
the patentability of such inventions – i.e (i) technical effect achieved by it, and its (ii)

technical contribution.

40. It isrightly stated by the learned counsel for the appellant that the

Respondent has incorrectly relied upon the judgment in Aerotel Ltd v. Telco Holdings

Ltd. &Ors. [2007]1All ER225 (“Aerotel”), to conclude it as the definitive statement on

the law on patentability of Computer Related Inventions, in the United Kingdom.

In the impugned order considers several judgments on the aspect of patentability of

Computer Related Inventions, it has incorrectly concluded that the judgment in Aerotelis

the definitive judicial pronouncement on the said subject matter, in the United Kingdom.

The same is evident from the following –

i. In paragraph 29 of the impugned order, the Respondent appreciates the four (4)

steps approach / test, as laid down by Aerotel, to determine the patentability of

Computer Related Inventions. The test is as follows –

a. properly construe the claim

b. identify the actual contribution;

c. ask whether it falls solely within the excluded subject matter;

d. check whether the actual or alleged contribution is actually technical in

nature

The Respondent did not appreciate that Aerotel does not define the term

“technical contribution(para 45 and 46). However, Aerotel specifies that, “The

second step - identify the contribution - is said to be more problematical……..

What has the inventor really added to

human knowledge perhaps best sums up the exercise.” As mentioned in

Paragraph 43 of Aerotel.
 ii. The judgment in Aerotel was not centred around the concept of “technical

contribution”, was also subsequently pointed out in the case of Symbian Ltd

v.Comptroller-General of Patents, (2009) R.P.C. 1. (“Symbian”).

41. While relying on Symbian, the Respondent also notes the judgment

in AstronClinica Ltd. v. Comptroller-General [2008] R.P.C. 14, [49] (“Astron”),

however it fails to rely upon the guidance provided by Astron on the aspect of

“technical contribution”.

Astron clarifies that in the case of a computer related invention which produces

a substantive technical contribution, the application of step (ii) will identify that

contribution and the application of step (iii) will lead to the answer that it does

not fall wholly within the excluded matter. Any computer related invention

which passes step (iii) but does not involve a substantive technical contribution

will fail step (iv). Therefore, following Aerotel, even Astron confirms that step

3 and step 4 are inter-related.

42. Status of corresponding Foreign applications

a. The Appellant has been awarded Patents for the present inventions in various

foreign jurisdictions, as detailed in the table below.

NAME OF DATE OF APPLICATI STATUS OF DATE OF

THE APPLICATI ON NO. THE GRANT

COUNTRY ON APPLICATI

ON

AUSTRAL 29 December 31 818/01 Patent 16

IA 2000 granted n°783 February

481 2006

NEW 29 December 00/03759 Patent 9 June

ZEALAN 2000 granted 2005

D n°520235

SOUTH 29 December 20025712 Patent 25

AFRICA 2000 granted February

n° 2002/5712 2004

EURASIA 29 December 20020726 Patent 25

2000 granted December

n° 004075 2003

CANADA 29 December PCT/FR/2000/ Patent 01

2000 003759 granted Septembe

r 2015

FRANCE 30 December 2803929B1 Patent 17

1999 granted Septembe

n° r 2004

FR9916704B1

CHINA 29 December 00819111.5 Patent 22

2000 granted November

 n° 2006

ZL00819111.5

HONG 29 December 04100 729.4 Patent 15 June

KONG 2000 granted 2007

n° HK 1058083

SINGAPO 29 December 200203926-1 Patent granted 31 October

RE 2000 n° 89975 2006

U.S.A. 29 December 10/169 355 Patent granted 18

2000 n° US September

8.271.877 2012

JAPAN 20 December 2001-550631 Patent granted 2 June

2000 n°6150454 2017

29 December

EUROPE 2000 10003146.7 Under Appeal -

U.S.A 9 September 14/480701 Application -

2014 pending

43. In the present case , more than nineteen and half years are passed in deciding the

present application by raising objections right and loft. The term of the patent in this

country is twenty years. The said patent is expiring in December, 2020. The same is
not the object of amending the law. The purpose will be defeated if application of

mind is missing. The present invention had a significant technical contribution to the

state of the art and possesses a critical technical effect

44. In the present case the appellant has been able to show that the patent

application is to be allowed. Thus the impugned order dated 7th February, 2020 in

respect of application number IN/PCT/2002/705/DEL passed by Respondent is set-

aside by allowing the appeal.

45. We allow the application of patent in hand on Indian Patent Application

No. IN/PCT/2002/705/DEL in favour of the appellant.

46. No costs

-Sd/- -Sd/-

(Dr. Onkar Nath Singh) (Justice Manmohan Singh)

Technical Member (PVPAT) Chairman

Disclaimer: This order is being published for present information and should not be taken as a certified copy
issued by the Board